DOCSLIB.ORG

Patent Families

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Patent Families Topic 3: Patent Families Lutz Mailänder Bangkok 21-23 November 2012 Head, Patent Information Section Hanoi 26-28 November 2012 Global IP Infrastructure Sector Agenda Families – why Families – which Types Unity of patents Families – implications for examination External results, worksharing Prior art Families – where Resources WIPO Handbook: http://www.wipo.int/standards/en/pdf/08-01-01.pdf EPO: http://www.epo.org/searching/essentials/patent-families.html PIUG: http://wiki.piug.org/display/PIUG/Patent+Families Landon IP: http://www.intellogist.com/wiki/Patent_Families Origin of patent families Patent protection for particular invention is territorial, i.e. inventors have to seek protection in different countries Office of first filing (OFF) is usually in country of residence of inventor or applicant Subsequent filings of improvements at OFF Applicants seek protection abroad (“extensions”) Office(s) of second filing (OSF) Parallel with OFF (cost), or Deferred, delayed All filings/applications for “same invention” constitute a patent family Origin of patent families Patent applications can claim priorities of earlier applications (filed in same or other IPOs) Priorities create (legal) family relations between respective earlier and later filings Family relations may exist also without claiming priorities (e.g., technical families) Types of patent families Priorities are claimed National families Filings abroad: Paris convention (&TRIPS) family Filings abroad: PCT system family Without priorities Technical families Domestic families PCT Families on national level National second filings Patent of addition Improvement of original invention of parent patent Unity with parent patent to be given; i.e. as if further independent claim of parent patent Depends on validity of parent patent Request possible up to 18 months after filing of patent patent National second filings Division E.g. for healing a lack of unity Possible usually anytime until grant enters into force „Continuation in part“ New national application claiming priority of one or several previous national application Up to 12 months after filing date of claimed priority National and domestic families National family Any national patent applications having at least on priority in common, e.g. additions, divisions, continuations Domestic family Subsequent publications of same application, i.e. with same number but with different kind codes, e.g. A1: Publication of application (18 months after filing date) B1: Publication of granted patent Various national publication policies see WIPO Standard ST.16 for kind codes: http://wipo.int/export/sites/www/standards/en/pdf/03-16-01.pdf Second filings abroad 12 Paris Convention of 1883 Covers patents, designs, trademarks,.. Equal protection to nationals and foreigners Foreigners: nationals and residents of Union country Mutual recognition of (Paris Convention) priority rights: at OSF: Treatment of application as if filed on date of first filing, i.e. same prior art 12 month period to claim priority Permits combination of multiple priority rights (same or different countries) As long as national definition of unity is met TRIPS agreement Agreement on Trade Related Intellectual Property Rights Provides for “derived” Paris Convention priority, termed “convention priority” Members to TRIPS agreement need not sign Paris Convention but need to apply respective paragraphs on priority rights Patent Cooperation Treaty - PCT „One-stop shop“ for parallel filing in several states Filing with „receiving office“ Paris priority may be claimed or not International phase administered by WIPO: preliminary search and examination by selected ISAs (International Searching Authority; eg EP, AT, SE, US, JP) National phase administered by national IPOs: Decision on entry into national phase at the latest 30 months after filing/priority date National granting procedures Total of national patents/publications constitute family Summary: Filing patents abroad 1. National Routes National Patent Offices Patents 2. Regional Route national Regional Patent Office (ARIPO, EPO) Patents 3. International Route (PCT) Nat. Pat. Off. Int. Search Auth. / Int. Prelim. Exam. Nat. Pat. Off. Authority Reg. Pat. Off. [International phase] [National phase] Timelines to be observed for OSF filing Options for extension to other jurisdiction, i.e. to Offices of Second Filing (OSF): Paris convention & TRIPS : 12 months PCT : 30 months Without priority claim : anytime, but effectively impossible after first publication of OFF since published first filing becomes prior art (e.g. 18 month where OFF publishes applications) Difficulties with later second filings OFF Prior art Filing date OSF Prior Prior art art Priority date Filing date Technical families Applications for the same invention filed in different countries without claiming priority constitute a technical family Indicators: Inventor name (should be the same) Drawings Title (Claims) Technical/artificial/intellectual family No priorities claimed explicitly but still same or similar invention, e.g. filings abroad after 12 months Paris period Has to be determined intellectually: Same inventor (Same applicant) Same or similar title, abstract Same drawings Is therefore usually not recorded in any database (Inpadoc to some extent if detected by EPO examiner) Technical families Risk of not claiming Paris priority: Later filing date implies different prior art, i.e. publications between OFF and OSF filing date are included OFF OSF Paris prior art Non -Paris prior art Supplementary to-up searches may reveal more prior art than other search reports obtained for family members using the priority Family concepts Claiming multiple and different priorities in and from different countries may lead to complex family structures, e.g.: OFF: two applications, e.g. JP-xx, JP-yy OSF: single application claiming priorities of JP-xx+ JP-yy Various concepts / rules exist for constructing families Largely built on the principle of shared priorities See WIPO Handbook definitions Samples Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Simple family All members of a family have same priority or priorities → “Equivalents” Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Family with 2 members Family with 1 member Complex family All members of a family share at least one priority Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 Families with 3 members Extended family Any member shares at least one priority with at least one other member Document D1 Prio P1 Document D2 Prio P1 Prio P2 Document? D3 Prio P1 Prio P2 Document D4 Prio P2 Prio P3 Document D5 Prio P3 All documents in same family Summary Application may belong at the same time to Domestic family National family Simple family Extended family An extended family may include Several simple families Several domestic families Several national families Content of family members Claiming the priority of another application for a second filing does not necessarily imply that the content, e.g. descriptions, are identical In case for 2nd filings abroad identity is very likely In general, only parts may be identical, other parts may be added to the 2nd filing, or parts of the 1st filing may be omitted (e.g. in case of continuations) If several priorities are claimed the content is definitively different Similarity for simple – extended families ? Simple family: family members include basically same inventive subject matter Extended family: family members are in similar technical area; but potentially larger diversity because two family members with different priorities may cover different inventions Patent laws usually stipulate unity of invention for any patent application, ie for any claimed invention (not for description) Sources of family information Family information has to be constructed from priority data EPO’s INPADOC database is major source of such family information, retrievable through: EPO’s CCD & Espacenet (simple and extended families) Other free patent information databases, like Depatis Commercial database, e.g. Thomson/Derwent: WPI family Questel/Orbit: Fampat family CAS Using widely INPADOC data, additional sources, and applying proprietary family construction rules Sources of family information Inpadoc family (extended) Simple family (equivalents) Family information in Espacenet INPADOC family data extended families 80+ countries Update weekly but depending on data supply from IPOs Simple families “also published as” equivalents Used for document reclassification after IPC revisions DE19830566 > 2 members, is national, domestic, simple DE19833712 Use of family information for examination ► Passive outsourcing/worksharing: Using external results of family members: Final result, i.e. granted claims, rejections Temporary results, i.e. search/examination reports, in particular prior art Planning/scheduling of active worksharing between IPOs, e.g. to avoid duplication of work INPADOC data comprises family information and legal status of family members Legal status data permits the assessment of examination status and an estimate for availability of final results Use of priority information for examination ► Filing or priority date (s) determine relevant prior art (own or external search results): Multiple priorities may imply multiple priority dates Requires application
Load more

Recommended publications
  • Patent Law: a Handbook for Congress
    Patent Law: A Handbook for Congress September 16, 2020 Congressional Research Service https://crsreports.congress.gov R46525 SUMMARY R46525 Patent Law: A Handbook for Congress September 16, 2020 A patent gives its owner the exclusive right to make, use, import, sell, or offer for sale the invention covered by the patent. The patent system has long been viewed as important to Kevin T. Richards encouraging American innovation by providing an incentive for inventors to create. Without a Legislative Attorney patent system, the reasoning goes, there would be little incentive for invention because anyone could freely copy the inventor’s innovation. Congressional action in recent years has underscored the importance of the patent system, including a major revision to the patent laws in 2011 in the form of the Leahy-Smith America Invents Act. Congress has also demonstrated an interest in patents and pharmaceutical pricing; the types of inventions that may be patented (also referred to as “patentable subject matter”); and the potential impact of patents on a vaccine for COVID-19. As patent law continues to be an area of congressional interest, this report provides background and descriptions of several key patent law doctrines. The report first describes the various parts of a patent, including the specification (which describes the invention) and the claims (which set out the legal boundaries of the patent owner’s exclusive rights). Next, the report provides detail on the basic doctrines governing patentability, enforcement, and patent validity. For patentability, the report details the various requirements that must be met before a patent is allowed to issue.
    [Show full text]
  • Patents and the Public Domain: Improving Patent Quality Upon Reexamination
    Patents and the Public Domain: Improving Patent Quality Upon Reexamination Prepared by Policy Intern Raeanne Young [email protected] May 2008 ELECTRONIC FRONTIER FOUNDATION eff.org Table of Contents EXECUTIVE SUMMARY ........................................................................................................................3 PATENTS AND THE PUBLIC DOMAIN .....................................................................................................4 The Problem With Patent Quality ..................................................................................................4 Policy Rationale: Encouraging Innovation .......................................................................................4 PATENT REEXAMINATION ...................................................................................................................6 Ex parte and Inter partes .............................................................................................................6 OVERALL REEXAMINATION TRENDS ......................................................................................................8 Ex Parte Reexamination Filing Data: July , 98 - December 3, 2007 ...............................................8 Inter Partes Reexamination Filing Data: November 29, 999 - December 3, 2007 .............................0 Comparison of Ex Parte and Inter Partes ......................................................................................0 PROMOTING FAIRNESS IN THE PATENT SYSTEM THROUGH REEXAMINATION .............................................2
    [Show full text]
  • Introduction to Patent Data
    Introduction to patent data Gianluca Tarasconi, rawpatentdata.blogspot.com IP introduction Querying patent databases is a process where user can meet pitfalls. Datasets answer exactly what they are asked. In order to ask the correct question some background is needed. IP overview Legal right What for? How? Application and Patents New inventions examination Original creative or Exists Copyright artistic forms automatically* Distinctive identification Use and/or Trade marks of products or services registration Registered External appearance Registration* designs Valuable information Reasonable efforts Trade secrets not known to10 the public to keep secret Worldwide patents filings https://www3.wipo.int/ipstats/ipslinechart by patent office 10 Patent Information (I): Ipad Patent Document front page (USD503889) The patent document is the data source; For statistical purposes the data must, however, be cleaned, normalized and reclassified; You need to be able to query (with queries or user interfaces); The latter is the reason why resources (databases, reports, etc.) where data has been preprocessed are used. 2 Patent front page 2 CAVEAT! Is 1 patent = 1 invention? NO Due to applicant strategy, institutional bias etc 1 patent family = 1 invention 10 * PATENT FAMILY DEFINITION A patent family is "a set of patents taken in various countries to protect a single invention (when a first application in a country – the priority – is then extended to other offices).“ In other words, a patent family is "the same invention disclosed by a common inventor(s) and patented in more than one country.” 10 PATENT FAMILY 10 PATENT FAMILY – from EPO Espacenet 10 CAVEAT 2! Is 1 document number= 1 patent? NO Also application kind defines type of application.
    [Show full text]
  • U.S. Department of Commerce U.S. Patent and Trademark Office
    Template Version Number: 01-2020 U.S. Department of Commerce U.S. Patent and Trademark Office Privacy Threshold Analysis for the Patent End to End (PE2E) System Template Version Number: 01-2020 U.S. Department of Commerce Privacy Threshold Analysis USPTO Patent End to End (PE2E) System Unique Project Identifier: PTOP-003-00 Introduction: This Privacy Threshold Analysis (PTA) is a questionnaire to assist with determining if a Privacy Impact Assessment (PIA) is necessary for this IT system. This PTA is primarily based from the Office of Management and Budget (OMB) privacy guidance and the Department of Commerce (DOC) IT security/privacy policy. If questions arise or further guidance is needed in order to complete this PTA, please contact your Bureau Chief Privacy Officer (BCPO). Description of the information system and its purpose: Provide a general description (in a way that a non-technical person can understand) of the information system that addresses the following elements: The E-Government Act of 2002 defines “ information system” by reference to the definition section of Title 44 of the United States Code. The following is a summary of the definition: “ Information system” means a discrete set of information resources organized for the collection, processing, maintenance, use, sharing, dissemination, or disposition of information. See: 44. U.S.C. § 3502(8). Patents End-to-End (PE2E) is a Master system portfolio consisting of next generation Patents Automated Information Systems (AIS). The goal of PE2E is to make the interaction of USPTO’s users as simple and efficient as possible in order to accomplish user goals.
    [Show full text]
  • Structure and Function of the Patent Specification August 2014
    Structure and Function of the Patent Specification August 2014 Structure and Function of the Patent Specification The structure of a patent specification is described below, with some explanations of underlying patent law concepts that the specification is designed to address. At the end of this note is a section which guides applicants in checking a specification that we prepare on their behalf. General Purpose The purpose of the patent specification is to fulfil the patentee’s part in the contract that a patent constitutes. In return for a full disclosure of the invention, the patentee can have a time-limited monopoly for the invention. During that time, the patentee has the right to stop others working the invention without permission. The monopoly generally lasts for twenty years, although annual renewal fees are usually payable. After the patent expires, the invention enters the public domain and cannot be patented again. A patent is enforced if necessary against infringers by action brought before the court. A patent specification is a legal document. Third parties and the court must be able to understand it, so that the limits of the protection it affords can be determined precisely. Structure of the specification • A patent specification normally has the following parts in the order given: • A title to identify the invention. • A statement as to the field to which the invention relates. • An explanation of the background “state of the art” – what was already known prior to the invention. • A statement of an objective technical problem which the invention seeks to solve, or an objective the invention is aimed at achieving.
    [Show full text]
  • Patent Litigation and USPTO Trials: Implications for Patent Examination Quality
    U.S. Patent and Trademark Office U.S. Department of Commerce Patent Litigation and USPTO Trials: Implications for Patent Examination Quality January 2015 PROJECT TEAM Office of Chief Economist Alan C. Marco Richard D. Miller Office of Patent Legal Administration Kathleen Kahler Fonda Pinchus M. Laufer Office of Patent Quality Assurance Paul Dzierzynski Martin Rater United States Patent and Trademark Office 600 Dulany Street Alexandria, VA 22314 Page 1 of 80 Executive Summary Introduction In response to a recommendation from the Government Accountability Office’s (GAO) Report GAO-13-465, the United States Patent and Trademark Office has conducted a study regarding the relationship between certain patent- and patent examination-related characteristics and the likelihood of subsequent patent infringement litigation initiated by the patent holder or inter partes review (IPR) petitions filed by a third party at the Patent Trial and Appeal Board (PTAB). The goal was to gather information that could lead to enhanced patent quality. A review of the existing literature revealed that significant empirical work has been conducted relating the likelihood of litigation to various characteristics of the patents and parties involved. However, we have found few attempts to relate characteristics of the patent examination process to subsequent litigation. Also, because the IPR option is relatively new, no work has been done to find any systematic differences between patents that undergo IPR and those that do not. The purpose of this report is to begin to fill in some of these gaps in the existing literature, and to determine the extent to which such studies can inform improvements to patent quality.
    [Show full text]
  • Evergreening" Metaphor in Intellectual Property Scholarship
    University of Missouri School of Law Scholarship Repository Faculty Publications Faculty Scholarship 2019 The "Evergreening" Metaphor in Intellectual Property Scholarship Erika Lietzan University of Missouri School of Law, [email protected] Follow this and additional works at: https://scholarship.law.missouri.edu/facpubs Part of the Food and Drug Law Commons, Intellectual Property Law Commons, and the Science and Technology Law Commons Recommended Citation Erika Lietzan, The "Evergreening" Metaphor in Intellectual Property Scholarship, 53 Akron Law Review 805 (2019). Available at: https://scholarship.law.missouri.edu/facpubs/984 This Article is brought to you for free and open access by the Faculty Scholarship at University of Missouri School of Law Scholarship Repository. It has been accepted for inclusion in Faculty Publications by an authorized administrator of University of Missouri School of Law Scholarship Repository. For more information, please contact [email protected]. DATE DOWNLOADED: Wed Jan 20 13:42:00 2021 SOURCE: Content Downloaded from HeinOnline Citations: Bluebook 21st ed. Erika Lietzan, The "Evergreening" Metaphor in Intellectual Property Scholarship, 53 AKRON L. REV. 805 (2019). ALWD 6th ed. Lietzan, E. ., The "evergreening" metaphor in intellectual property scholarship, 53(4) Akron L. Rev. 805 (2019). APA 7th ed. Lietzan, E. (2019). The "evergreening" metaphor in intellectual property scholarship. Akron Law Review, 53(4), 805-872. Chicago 7th ed. Erika Lietzan, "The "Evergreening" Metaphor in Intellectual Property Scholarship," Akron Law Review 53, no. 4 (2019): 805-872 McGill Guide 9th ed. Erika Lietzan, "The "Evergreening" Metaphor in Intellectual Property Scholarship" (2019) 53:4 Akron L Rev 805. AGLC 4th ed. Erika Lietzan, 'The "Evergreening" Metaphor in Intellectual Property Scholarship' (2019) 53(4) Akron Law Review 805.
    [Show full text]
  • Preparation and Filing of a Provisional Patent Application I
    i Preparation and Filing of a Provisional Patent Application Introduction A provisional application is a means for inventors to easily, quickly and inexpensively obtain “patent pending” status and establish a priority date in the United States Patent and Trademark Office. The provisional application has a one year term. Prior to the expiration of the provisional, a regular utility patent application must be filed which claims priority to the earlier filing date of the provisional. The provisional application is usually less expensive since all of the formal requirements that are needed for a regular utility patent application are not required. In addition, there is no requirement to include write “claims” for the invention. While the claims are important to ultimately define the scope of the invention, preparation of valid claims can be the most difficult section for the lay person to prepare. To the untrained eye, the claims sometimes appear to include highly technical jargon written in a foreign language. But the legal requirements of defining the metes and bounds of an invention require a high degree of precision which is not always easily expressed in plain language. Assuming that the same subject matter of the utility application is included in the provisional application, it is as if the utility application was filed as of the earlier provisional date. This is important since the first to file will typically be considered the first inventor. Note that the provisional priority date only applies for material included in the provisional application. Thus, details are important! During this one year period, the inventor can investigate the commercial feasibility of the invention to determine if the cost of a regular patent application is worth the expense.
    [Show full text]
  • M&A Strategy
    MODULE 06 Patent Information MODULE 06. Patent Information OUTLINE LEARNING POINT 1: Understanding patent information 1. Patent information & Patent documents (1) Patent Information (2) Patent documents 2. Advantages of patent information LEARNING POINT 2: Type of patent information search 1. State‐of‐the‐art & Patentability search (1) State‐of‐the‐art search (2) Patentability search 2. Infringement search 3. Validity search 4. Index or name search LEARNING POINT 3: Method of patent information search 1. Types of patent information databases (1) CD‐ROM (2) Online databases 2. Selection of databases 3. Example of on‐line databases search (1) How to access Full‐Text database (2) How to use a Quick Search page LEARNING POINT 4: Strategic use of patent information 1. In licensing (1) ‘Licensing in’ technology (2) ‘Licensing out’ technology (3) ‘Cross‐licensing’ 2. In Mergers & Acquisitions 3. In Research & Development 4. In Human Resource Management INTRODUCTION Even the latest gadgets get outdated in no time. Umpteen, new or improved models are constantly appearing on the market. Can something be really done to survive this fierce competition? In this module, we look at the role of patent information in protecting a business as well as in helping it to gain a competitive edge. In particular, we are going to deal with what is meant by patent information and why it is important and discuss how patent information may be used including searching patent information and strategically using the results of such a search. LEARNING OBJECTIVES 1. You understand the concept of patent information. 2. You understand how to strategically use patent information.
    [Show full text]
  • Inventions and Patents
    MODULE 03 Inventions and Patents MODULE 03. Inventions and Patents OUTLINE LEARNING POINT 1: Basics of invention and patent 1. One way of adding value to a product 2. Reasons for patenting an invention LEARNING POINT 2: Patent application 1. Evaluating the patentability of an invention 2. Deciding whether to patent an invention 3. Preparing a patent application (1) Detailed description of the invention (2) Claims (3) Who prepares (4) After filing a patent application LEARNING POINT 3: Patent infringement 1. Definition of patent infringement 2. If you come across your competitor’s patent LEARNING POINT 4: Patent management system 1. Basic elements of a patent management system 2. Patent portfolio INTRODUCTION The term "intellectual property (IP)" is defined as the property resulting from creations of the human mind, the intellect. In this regard, it is fair that the person making efforts for an intellectual creation has some benefit as a result of this endeavor. Probably, the most important among intellectual properties is “patent.” A patent is an exclusive right granted by a government for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. The details on the way of acquiring patents will be provided for protecting precious intellectual properties. LEARNING OBJECTIVES 1. You understand how to decide whether your new technology or invention should be protected by one or more patents and, if so, how to do so. 2. You know how the grant of a patent over an invention or technology helps you to prevent or have an upper hand in legal disputes that may arise later on.
    [Show full text]
  • Patenting: a Guidebook for Patenting in a Post-America Invents Act World
    Foley Hoag eBook PATENTING: A Guidebook For Patenting in a Post-America Invents Act World by Beth E. Arnold PATENTING: A GUIDEBOOK FOR PATENTING IN A POST-AMERICA INVENTS ACT WORLD IN A POST-AMERICA A GUIDEBOOK FOR PATENTING PATENTING: 1 Contents Preface ............................................................................................................1 Chapter 1 What Is a Patent? ..........................................................................................2 Chapter 2 What Is Potentially Patentable? ................................................................5 Chapter 3 What Is Not Patentable? .............................................................................7 Chapter 4 How Is a Patent Obtained? .......................................................................16 Chapter 5 What Should You Do Before Filing a Patent Application? ...............25 Chapter 6 What Shouldn’t You Do Before Filing a Patent Application? ...........28 Chapter 7 How Are Foreign Patents Obtained? .....................................................29 Chapter 8 Who Is an Inventor on a Patent? ............................................................33 Chapter 9 Who Owns the Patent? ..............................................................................35 Chapter 10 How Long Is a Patent in Effect? .............................................................39 About Foley Hoag ...............................................................................................42 About the Author: Beth E. Arnold .........................................................................43
    [Show full text]
  • Unity of Invention
    National Workshop on the Patent Cooperation Treaty (PCT) System Unity of Invention November 28, 2016 Japan Patent Office 0 Outline I. Definition and Purpose of “Unity” II. How to examine “Unity” 1 I. Definition and Purpose of “Unity” A. Definition The unity of invention is one invention or a group of inventions so linked as to form a single general inventive concept. The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept ("requirement of unity of invention"). (Rule 13.1) Claim 1 : Antenna of high sensitivity for a cell phone. Claim 2 : Hinges for folding a cell phone. Satisfy the “Unity” requirement? 2 I. Definition and Purpose of “Unity” B. Purpose The search fee is intended to compensate ISA for carrying out an international search on the international application relating to one invention only or to a group of inventions so linked as to form a single general inventive concept. (PCT Applicant’s Guide 7.015) The international application shall comply with the prescribed requirement of unity of invention. (Art.3, (4)(iii)) If the International Searching Authority considers that the international application does not comply with the requirement of unity of invention as set forth in the Regulations, it shall invite the applicant to pay additional fees. (Art.17, (3)(a)) 3 II. How to examine “Unity” A. Finding Independent Claims Unity of invention has to be considered in the first place only in relation to the independent claims in an international application and not the dependent claims.
    [Show full text]